BULKY DOCUMENTS
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`(Exceeds 100 pages)
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`Proceeding/Serial No: 91 1 953 90
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`Filed: 08[05[201O
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`Title: MOTION TO SUSPEND PROCEEDINGS UNDER
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`37 CER. § 2.117
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`Part
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`1
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`of
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`1
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`(Exceeds 100 pages)
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`Proceeding/Serial No: 91 1 953 90
`
`Filed: 08[05[201O
`
`Title: MOTION TO SUSPEND PROCEEDINGS UNDER
`
`37 CER. § 2.117
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`Part
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`1
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`of
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`1
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`i)ii<iit"1‘ D1/\l..\'LIMBlZR:
`(215) 575-7181
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`V
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`,5
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`/' / ’f " '4
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`7
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`JOHN W. Go1.r>sciIM1DT. JR.
`'goldschmidt@dilworthlaw.com
`
`TTAB
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`August 2, 2010
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`VIA FIRST CLASS MAIL
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`United States Patent and Trademark Office
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`Trademark Trial and Appeal Board
`I’.(). Box 1451
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`Alexandria. Virginia 22313-1451
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`RIC:
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`UCF Trading Company, Ltd. v. UCF America Inc.
`Opposition N0.: 91195390
`
`Dear Sir:
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`In reference to the above-captioned application, enclosed are the following:
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`1.
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`2.
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`Motion to Suspend Proceedings under 37 CPR. §2.117 (121 pages); and
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`a Return postcard.
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`is hereby authorized to charge any deficiencies or credit any
`llie Commissioner
`overpayment related to this submission to Deposit Account Number 50-0979.
`
`1)
`
`‘It
`
`(I,
`
`.
`
`1f
`
`5V“ 6
`John Wéolds
`rnidt. Jr.
`Re (st/anon No. 34,828
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`J\\’(]/smp
`linclosures
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`Illlllllllllllllllllllllllllllllllllllllllllllllll
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`U8-05-2010
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`Yvv-; _ v». u_ V‘
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`(‘/'.'/€'/”ll"I(':
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`1]'I_{ ()/" .1/.»lIlJ,\'(i ('.\'l)/-QR 3}’ ( ' I '.l\’. 3‘ /.5‘
`
`I hcrcb) ccrtil’) that this correspondence . and all papers and tliiiigs referred to herein as being attached.
`enclosed. transmitted. or otherwise submitted, are being deposited with the US. Postal Service with sufficient
`postage as lirst class mail in an envelope addressed to; Commissioner for 'l radcmarks, A'I 'IN:
`'l'rademarl< Trial and
`Appeal Board. PO. Box 1451, Alexandria. Virginia 22313-1451 on the date shown below:
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`:
`
`1
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`Sarah M. Pieeone
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`g./._'.*lQr_-.(WV;/;__) 15121“
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`.
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`875823 1
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`Date: ,_\.ugus_t2,_2_0_1O
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`UCF TRADING COMPANY LTD.,
`
`Opposer,
`
`V.
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`UCI5 AMERICA INC.
`
`Applicant.
`
`Opposition No. 91 195390
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`MOTION TO SUSPEND PROCEEDINGS UNDER 37 C.F.R. §2.117
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`UCF America Inc. (hereinafter “Applicant”), by and through its undersigned
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`counsel, Dilworth Paxson LLP, hereby respectfully requests that the Trademark Trial and Appeal
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`Board (hereinafter the ‘‘Board’’) suspend proceedings in the above—captioned Opposition
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`pursuant to 37 C.F.R. §2.l l7(a).
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`On April 1, 2010, Applicant instituted Civil Action No.
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`l0—CV-0l675—RMB—JS
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`now pending in the District of New Jersey against UCF Trading Company Ltd. (hereinafter
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`“Opposer") alleging, among other counts,
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`trademark infringement of App1icant’s UNA
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`CERTIFICATE OF MAILING UNDER 37 C. F. R. 5 1.8
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`I hereby certify that this correspondence , and all papers and things referred to herein as being attached,
`nclosed, transmitted, or otherwise submitted, are being deposited with the U.S. Postal Service with sufficient
`stage a first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria,
`ginia
`31 -145 1 ,AT TN: Trademark Trial and Appeal Board, on the date set forth below:
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`Date: August 2, 2010
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`
`
`h M. Picconc
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`875756_1
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`
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`trademark. Copies of the Complaint filed by Applicant, as well as the Answer and Counterclaim
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`filed by Opposer, and the Answer to the Counterclaim filed by Applicant in the District Court
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`action are attached hereto as Exhibit A.
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`On or about June 21, 2010, Opposer filed with the Board a Notice of Opposition
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`against
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`the registration of Applicant’s United States Trademark Application Serial No.
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`77/894,609 (hereinafter “Application”) for the UNA mark. The Notice of Opposition alleges,
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`among other claims, that Applicant’s use of the UNA mark is likely to cause the public to be
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`confused, mistaken or deceived as to the origin of Opposer’s and Applicant’s goods.
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`37 C.F.R. § 2.1 l7(a) provides that:
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`Whenever it shall come to the attention of the Trademark Trial and
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`Appeal Board that a party or parties to a pending case are engaged
`in a civil action .
`.
`. which may have a bearing on the case
`proceedings before the Board may be suspended until termination
`of the civil action .
`.
`.
`.
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`Inasmuch as the parties to the instant Opposition are engaged in a civil action in
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`the District of New Jersey which addresses the same issue of confusion regarding the use of the
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`UNA mark currently alleged in the instant Opposition (the disposition of which would have a
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`direct bearing on the proceeding now before the Board), Applicant respectfully requests that,
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`pursuant to 37 C.F.R. § 2.117(a), the instant Opposition be suspended until termination of the
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`civil action now pending in the District of New Jersey.
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`In addition, suspension of the instant
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`proceeding at this time may result in the economies of time and money to the Board and to the
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`parties.
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`WHEREFORE,
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`for
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`the foregoing reasons, Applicant, UCF America,
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`Inc.,
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`respectfully requests that:
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`(a) the instant Opposition No. 91195390 be suspended until
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`the
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`37575o_1
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`
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`termination of Civil Action No.
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`l0—CV—01675-RMB-JS now pending in the District of New
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`Jersey; and (b) upon the termination of Civil Action No. 10-CV-01675-RMB-JS, the Board reset
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`the trial dates set forth in the Board’s notice dated June 23, 2010, including the time for
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`Applicant to respond to Opposer’s Notice of Opposition.
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`The Commissioner is herby authorized to charge any fees associated with this
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`Motion to Deposit Account No. 50-0979.
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`_
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`,./-3;".
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`/
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`.,:
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`_
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`Respectfully submitted,
`1/
`/
`//,/I
`«'1
`John WK/Aéoldrschmliflt, Jr., Esquire
`’ Registrfiion No. 34,828
`Phillip J. Foret, Esquire
`Registration No. 51,689
`V DILWORTH PAXSON LLP
`1500 Market Street, Suite 3500E
`Philadelphia, Pennsylvania 19102
`Phone: 215-575-7000
`Fax: 215-575-7200
`
`Dated: August 2, 2010
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`Attorneysfor Applicant, UCF America Inc.
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`875756_I
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
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`UCF TRADING COMPANY LTD.,
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`Opposer,
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`V.
`
`Opposition No. 91195390
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`UCF AMERICA INC.
`
`Applicant.
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`CERTIFICATE OF SERVICE
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`I, John W. Goldschmidt, Jr, Esquire, do hereby certify that I have, this 2ND day of August,
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`2010. served the following with a true and correct copy of Applicant’s Motion to Suspend
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`Proceedings Under 37 CPR. §2.1l7 by United States mail:
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`Edward D. Manzo, Esquire
`Husch Blackwell Sanders Welsh & Kat’/. LLP
`120 South Riverside Plaza
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`Suite 2200
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`Chicago, Il 60606
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`I
`
`John w. G/' ldgchmidt, 'Jr.
`/
`/
`_
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`/
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`/
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`875756_I
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`
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`EXHIBIT A
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`
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`Case 1:10—cv—O1675—RMB —JS Document 1
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`Filed 04/01/10 Page ‘I of21 PagelD: 1
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR TIIE DISTRICT OF NEW JERSEY
`CAMDEN VICINAGE
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`ll(7F AMERICA INC,
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`Plaintiff,
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`ZAT PARTS INTERNATIONAL, INC. and
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`UCF TRADING COMPANY LTD.
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`I)efendants.
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`N0. 10—CV-
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`COMPLAINT
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`Plaintitl”. U(‘l" /\merica lne. (hereinafter "Plaintifl‘”). by its undersigned counsel alleges
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`for its complaint against defendants. 7./\'l‘ Parts International. Inc. and UCF Trading Company
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`l,td. (collecti\'el_\' relerred to herein as “I)ci‘endants"). as follows:
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`THE PARTIES
`
`l.
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`l’laintil'l‘is a corporation \vith its principal place of business at I025 Busch
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`lliglmay. Pennsauken. New Jersey 08110.
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`For over 25 years Plaintiff has been one of the
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`leading providers ol' the highest quality leal" springs, spindles. bearings, castings, and other
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`related running gear components available to the light and medium duty trailer industries.
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`2.
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`Upon information and belief, Defendant '/./\'l‘ Parts International.
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`lnc. is a
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`corporation with its principal place otihusiness at 25l6 Industrial Park Drive, Suite C, (ioshen.
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`Indiana 46526 (hereinalter “ZA'l“").
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`
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`Case 1:10—ev~O‘|675-RMB —JS Doeumentl
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`Filed 04/01/10 Page 2 of21 PagelD: 2
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`3.
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`Upon information and belief. ZAT is engaged in the business ofproviding
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`leaf springs. hubs. drums. spindles, electric brakes to the trailer and other industries. Upon
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`information and belief. [AT is found and/or transaets business within the District ofNc\\ Jersey.
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`4.
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`Upon information and belief. I)efendant UCI’ Trading Company Ltd.
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`is a
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`corporation incorporated in the Commonxxcalth of the Bahamas with its principal place of
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`business at Bahamas Financial Center. 3” Floor, Shirley and Charlotte Streets, PO. Box T\l—40l 0,
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`.\lassau_ Bahamas (hereinafter “Trading").
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`3.
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`Upon information and belief. Trading is engaged in the business of
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`providing leafsprings to ()liM axle manufacturers and to the mobile home trailer industry. Upon
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`information and belief. Trading is found and/or transacts business within the District ofNew
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`.lersey.
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`JURISDICTION AND VENUE
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`6.
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`This Court has jurisdiction over the subject matter ofthis action pursuant
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`to 28 U.S.C. §§ 133 l. I338. and l367. as this action arises under the Lanham Trademark Act. 15
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`U.S.C. § l()5l cl .m/.. and common law trademark infringement. unfair competition and the New
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`Jersey /\nti—Dilution statute.
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`7.
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`Venue is properly laid in this jurisdiction pursuant to the 28 U.S.(‘. §§
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`|3‘)l(b) and/or l3‘)l(c) in that. upon information and belief. the Defendants regularly conduct
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`business in this District, and/or are subject to personal jurisdiction in this District.
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`s‘€n17X_]
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`
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`Case 1:10—cv—01675—RMB —JS Document 1
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`Filed 04/01/10 Page 3 of2’| Page|D: 3
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`BACKGROUNI)
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`Plaintiff’s Adoption and Use of the
`UNA Mark and UNA Parts Numberin-I System
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`8.
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`Plaintiff was incorporated in 1985 and. since that
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`time, has grown to
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`become one ol‘ the countiys leading suppliers oi" high quality lcaiisprings, spindles. bearings.
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`castings. and other related running gear components available to the light and medium duty
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`trailer industries.
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`9.
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`Also in 1985. l’|aintili" adopted and began using a parts numbering system
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`in connection with the promotion and sale of Plaintift”s products including leaf spring products.
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`lihis numbering system incorporates a prelix comprising the letter string "UNA" (l1C]”Cll‘l£liiC1‘ the
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`"UNA Mark") followed by a three digit number (eg. UNA-222) (hereinafter referred to as the
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`“UNA Parts Numbering System"). Attached hereto as lixhibit A are screenshots of l’laintifl‘s
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`\\ebsite which show current representative usages ot'Plaintit‘l‘s UNA parts numbers.
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`10.
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`Since at least as early as 1985, Plaintiff has extensively and continuously
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`used in interstate and loreign commerce the UNA l\/lark and UNA Parts Numbering S) stem in
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`connection with its leaf springs and other products.
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`including over one hundred light and
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`medium duty multiple leal‘ springs and drop spindles for light and medium duty suspension
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`applications.
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`I 1,
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`Plaintiff has garnered substantial. nationvvide rights in the UNA Mark and
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`UNA Parts Numbering System by virtue oi" its extensive use olithc UNA Mark and UNA Parts
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`Numbering System in connection with its leaf springs and other products.
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`12.
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`l’laintift‘s leaf springs and other products sold under the UNA Mark and
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`in connection with the UNA Parts Numbering System. have been extensively and continuously
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`offered to the general public. including but not limited to axle manufacturers including mobile
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`.\’<!w37.\’/l
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`
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`Case 1:10-ev—0‘|675—RMB —JS Doeumentt
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`Filed 04/01/10 Page 4 of21 PagelD: 4
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`home axle manufacturers. trailer manufacttircrs. distributors. and recyclers. and particularly to
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`the light and medium duty trailer industries.
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`I3.
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`Plaintiff has also extensively advertised its leaf springs and other products
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`under the lll\',»\ Mark and UNA Parts Numbering System throughout the United States and to
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`such business concerns.
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`14.
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`By reason of such advertising since at
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`least as early as W85.
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`including
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`promotion in industry-wide publications and at trade shows. through its website. as well as in
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`catalogues. brochures. price lists.
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`sales quotations. purchase orders,
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`invoices and other
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`inzirketing. promotional and sales materials. as well as though its extensive sales of l’laintil‘l’s
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`leal‘ springs and other products under the UNA Mark and UNA Parts Numbering System, the
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`public has come to recognize the UNA l\/lark and UNA Parts Numbering System. as signifying
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`l’laintil'l' and its products.
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`In this regard. Plaintilif has built up extensive goodwill in connection
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`with the sale and advertising of its goods under the UNA Mark and UNA Parts Numbering
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`System.
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`Defendant ZAT’s Website
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`13.
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`Upon information and belief. Defendant ZAT commenced doing business
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`in 200‘) by advertising. offering for sale, and selling certain suspension components including
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`lealsprings by using the llNA Mark and UNA Parts Numbering System.
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`I6.
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`Upon information and belief. [AT is the current registrant ofthe domain
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`\\ \\ \\'./atpartscom.
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`l7.
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`Upon information and belief. ZAT acquired the registration ior the
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`m\ w.7.atparts.com domain on or about September 4, 2009.
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`
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`Case 1:10-cv-01675-RMB —JS Document 1
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`Filed 04/01/10 Page 5 of21 Page|D: 5
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`l8.
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`Upon information and belief, /.A'l‘ operates and/or controls the operation
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`ofthe website located at the \v\vw.7.atparts.com domain (herinafter the “KAT Website“).
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`I0.
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`Upon information and belief.
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`'/‘AT has been advertising. selling and/or
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`offering for sale leafsprings and other products through the ZAT Website.
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`Defendant ZAT’s Infringing Activities
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`20.
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`Attached hereto as [ixhibit B are copies of certain pages from the [AT
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`Website which depict information related to certain leaf springs offered for sale by ZAT. The
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`attached pages alone set forth in excess ofthirty references to leaf springs which use Plaintiffs
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`UNA Mark and UNA Parts Numbering System to identify the leaf springs offered.
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`21.
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`in many cases, the leaf springs identified by Plaintiffs UNA Mark and
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`UNA Parts Numbering System in lixhibit B appear under a column entitled “ZAT Part Number.“
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`22.
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`Plaintiffhas not authorized Defendant ZAT to use either the UNA Mark or
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`UNA Parts Numbering System in connection with the sale or advertising of Defendant '/.AT's
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`products.
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`23.
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`Upon information and belief. Defendant ZAT has sold and/or offered for
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`sale in commerce regulated by (‘ongress leafsprings bearing the UNA Mark and/or by otherwise
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`using the UNA Parts Numbering System.
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`34.
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`Upon information and belief, the leaf springs sold and/or offered for sale
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`by Defendant '/AT under the UNA l\/lark and UNA Parts Numbering System are of inferior
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`quality to that of the leaf springs sold by Plaintiff under the UNA Mark and UNA Parts
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`Numbering System.
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`K%oR7X_|
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`Case 1:10-cv-O1675—RMB —JS Document 1
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`Filed 04/01/10 Page 6 of 21 PagelD: 6
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`33.
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`Upon information and belief, both Plaintiff and Defendant [AT compete
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`for the same class ofconsumcrs. At the \’Cl‘}' least. Plaintiffs and Defendant ZA'l'”s leafsprings
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`associated \\ ith the UNA Mark and UNA Parts Numbering System are the sort which consumers
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`would assume. and liave assumed. a commonality ofsource. affiliation. or sponsorship ifsold or
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`offered in connection with the same or similar marks.
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`Plaintiffs Notices oflnfringcment
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`26.
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`During a telephone call
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`in December of 2009. Plaintiffs President
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`informed Trading”s President and Chief lixceutivc ()ffiecr, Mr. Robert Gagnon, that Plaintiff
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`was the owner ofthc UNA Mark and UNA Parts Ntimbering System.
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`27.
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`Upon information and belief. subsequent to the December 2009 telephone
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`call. Trading took affirmative steps to discontinue Trading’s use of the UNA Mark and UNA
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`Parts Numbering System,
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`28.
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`By letter dated January 22. 2010. attached hereto as Exhibit C, Plaintifl'.
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`through its counsel. contacted ZAT to advise /AT of Plaintiffs rights in the UNA Mark and
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`UNA Parts Numbering System and to demand that 7,A'f immediately discontinue ZAT‘s use of
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`Plaintiffs UNA Mark and UNA Parts Numbering System.
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`29.
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`Notwithstanding Plaintilfs longstanding and extensive prior use. by letter
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`dated January 29. 2010. attached hereto as Exhibit I), /‘AT. through its counsel representing both
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`Defendant ZAT and Defendant Trading. refused to discontinue its use of the UNA Mark and
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`UNA Parts Numbering System based upon an unsubstantiated claim that Defendant Trading "is
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`the lawful owner ofthe mark UNA, and any ownership claims by [Plaintiff] to the UNA mark
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`are completely unfounded.
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`[Defendant Trading] has used the UNA mark for many decades.”
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`s5<t,:7s_i
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`Case 1:10-cv—O1675—RMB ~.JS Document 1
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`Filed 04/01/10 Page 7 of 21 Page|D: 7
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`30.
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`By letter dated february 25. 2010. attached hereto as Exhibit E. Plaintiff
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`denied both l)efendant Trading”s unsubstantiated claim of ownership and prior use oftlte UNA
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`Mark and llNA Parts Numbering System and reiterated Plaintiffs continuous use of the UNA
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`.\/lark and UNA Parts Numbering System since the 1980s.
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`In fact, Plaintiff pointed out that
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`Defendant Trading could not have used the UNA Mark or UNA Parts Numbering System prior
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`to Plaintiffsince Defendant Trading was not formed as an entity until the late l9‘)0‘s.
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`3 l.
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`Defendants [AT and Trading claim use ofthe UNA Mark and UNA Parts
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`Numbering System prior to that of Plaintiff as a result of alleged use by Defendant Trading"s
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`alleged predecessors in interest. See Defendants’ letter dated March 2. 2010. attached hereto as
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`l€xhibit F.
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`32.
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`Upon information and belief. neither Defendant ZAT nor Defendant
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`Trading. either itself or through any predecessor in interest. has used prior to Plaintiffthe UNA
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`Mark or UNA Parts Numbering Systcm,.
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`33.
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`Upon information and belief. neither
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`l)efendant ZAT nor Defendant
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`Trading. either itself or through any predecessor in interest. has continuously used the UNA
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`Mark or UNA Parts Numbering System since Plaintiffs lirst Lise of the UNA Mark or UNA
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`Parts l\'umbering System.
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`34.
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`Upon information and belief. to the extent that Defendant Trading and/or
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`Defendant Tradings alleged predecessors in interest ever used the [INA Mark and UNA Parts
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`Numbering System. Defendant Trading and/or Defendant Trading's predecessors in interest
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`discontinued Lise ofthe UNA Mark and UNA Parts Numbering System without the intention to
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`TCSLIIHC USC.
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`x<<»::7xWi
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`
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`Case 1:10—cv—O1675—RMB —JS Document 1
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`Filed 04/01/10 Page 8 of 21 PagelD: 8
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`35.
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`Upon information and belief. to the extent that Defendant Trading and/or
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`Defendant 'l‘rading‘s alleged predecessors in interest ever owned the UNA Mark and Ui\'A Parts
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`Numbering System. Defendant Trading and/or Defendant
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`'l‘rading's predecessors in interest
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`acquiesced in l’laintifl‘s use ofthe UNA Mark and UNA Parts Numbering System.
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`36.
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`Upon information and belief to the extent that Defendant Trading and/or
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`Defendant Trading‘s alleged predecessors in interest ever owned the UNA Mark and UNA Parts
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`Numbering System, Defendant Trading and/or Defendant Trading"s predecessors in interest did
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`not exercise supervision or control over Plaintiffs use of the UNA Mark and UNA Parts‘
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`Numbering System.
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`Defendant Trading’s Infringing Activities
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`37.
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`Upon information and belief, and notwithstanding Plaintiffs longstanding
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`prior rights in the UNA Mark and UNA Parts i\'umbering System and statements made during
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`the December 2009 telephone conversation. Defendant Trading. with full knowledge of
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`l’laintifl‘s prior rights. filed United States Trademark Application Serial No. 77/927878 for the
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`UNA lylark for use in connection with "Ll-IAF SPRINGS AND Rl{l.ATliD SUSPF.NSl()N
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`C( )l\'l|’()Nl{NTS" (hereinafter "Defendant Trading’s Trademark /\pplication").
`
`38.
`
`Upon information and belief. Defendant 'frading’s Trademark Application
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`was tiled in the United States Patent and Trademark Office on or about February 4. 2010.
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`3‘).
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`Defendant Trading’s Trademark Application affirmatively claims a date of
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`first use and lirst use in commerce ofthe UNA Mark oflanuary 1. I986.
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`40.
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`Defendant Trading’s Trademark Application affirmatively states that the
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`UNA mark is “now in use“ by Defendant Trading.
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`X5(»37S_l
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`Case 1:tO—cv-01675-RMB —JS Document 1
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`Filed 04/01/10 Page 9 of 21 PagelD: 9
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`41.
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`Defendant Trading's claimed date of first use of the UNA \/lark in
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`l)elendant '|‘rading‘s Trademark Application is a date later than Plaintiffs established date of
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`lirst use ofthe UNA Mark and UNA Parts Numbering System.
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`42.
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`Defendant Tradittgs Trademark Application affirmatively states that
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`“'Applicz1nt|i.e. Defendant 'l‘rading_| claims rights superior to those identified in the Intent to Use
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`Application Serial No. 77894600."
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`43.
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`Defendant Trading‘s Trademark Application affirmatively states that
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`"[t]he Applicant [i.e. Defendant Trading] is submitting one specimen(s) showing the mark [i.e.
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`UN/\| as used in commerce on or in connection with any item in the class oflisted goods and/or
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`services [i.e.
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`leaf springs and related suspension components]. consisting of a(n) digital
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`photographs [sic] ofthe mark as used."
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`44.
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`Upon information and beliel’.
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`the specimen submitted with Defendant
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`'l‘rading‘s Trademark Application is a photograph ofa leafspring bearing the designation "UNA-
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`312."
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`45.
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`Plaintiff has not authoriyed Defendant Trading to use either the [INA
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`Mark or UNA Parts Numbering System in connection with the sale or advertising of Defendant
`
`'l‘rading's products.
`
`46.
`
`Upon information and belief. Defendant Trading has sold and/or offered
`
`for sale in commerce regulated by Congress leaf springs bearing the UNA Mark and/or by
`
`otherwise using the UNA Parts Numbering System.
`
`47.
`
`Upon information and belief. both Plaintiff and Defendant Trading
`
`compete for the same class ofconsumers. At the very least, Plaintiffs and Defendant Trading”s
`
`leaf springs associated with the UNA Mark and UNA Parts Numbering System are the sort
`
`xsiusm I
`
`
`
`Case 1:10—Cv—O1675—RMB —JS Document ‘I
`
`Filed 04/01/10 Page 10 of2’| PagelD: 10
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`which consumers \\ould assume. and have assumed. a commonality of source. afiilizttion. or
`
`sponsorship ifsold or oliliered in connection with the same or similar marks.
`
`48.
`
`Notwithstanding l’laintifl‘s longstanding prior rights in the UNA Mark
`
`and UNA Parts Numbering System and statements made during the December 2009 telephone
`
`conversation. through its counsel. declared to the United States Patent and Trademark Otitice in
`
`l)et'endant 'l‘rading‘s Trademark Application that "he/she believes the applicant to be the owner
`
`olithe trademark/ser\'ice mark sought to be registered, or, if the application is being filed under
`
`I5 U.S.(‘. Section l()5l(b). he/she believes applicant
`
`to be entitled to use such mark in
`
`commerce: to the best of his/her knowledge and belief no other person, firm, corporation, or
`
`association has the right to use the mark in commerce. either in the identical form thereof or in
`
`such near
`
`resemblance thereto as to be likely. when used on or
`
`in connection with the
`
`goods/services ol‘ such other person. to cause confusion. or to cause mistake. or to deceive; and
`
`that all statements made oi‘ his/her own knowledge are true; and that all statements made on
`
`iI1lt)l‘mLtll0n and be|ielat"c believed to be true.“
`
`COUNT I
`FEDERAL UNFAIR COMPETITION
`
`49.
`
`Plaintiliti incorporates b} t'etcrei1ce Paragraphs 1
`
`through 48 above as set
`
`forth full} herein.
`
`50.
`
`Plaintilitis UNA Mark and UN/\ Parts Numbering System are valid and
`
`proteetable marks and designations oforigin.
`
`3|.
`
`Plaintitt has used in connection with leaf springs Plaintiffs UNA Mark
`
`and UNA Parts Numbering System in commerce regulated by Congress prior to either Detendant
`
`X56373/I
`
`
`
`Case 1:10—Cv—O1675—RMB —JS Document 1
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`Filed 04/01/10 Page 11 of21 PagelD: 11
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`[A l“s or Defendant Trading's first use ofthe UNA Mark and/or UNA Pans Numbering System
`
`in connection with leatsprings.
`
`52.
`
`Through extensive el'l'orts by Plairitiff.
`
`the UNA Mark and UNA Parts
`
`Numbering System have come to ha\'e significance in the mind of the relevant
`
`trade and
`
`purchasing public as
`
`indicators‘ of products originating with. sponsored by. or 0tl1Cl'\\iSL:
`
`associated with Plaintilili.
`
`53.
`
`Defendant
`
`/4A’|“s and Defendant Tradingis products are
`
`in direct
`
`competition with Plaintifl‘s products.
`
`54.
`
`Defendant Z/\T”s and Defendant Trading’s products are otTei'cd and/or
`
`rendered to the same or similar class of consumers and/or purchasing public as are Plaintil’l”s
`
`products.
`
`55.
`
`Defendant
`
`'/.A'l“s and Defendant
`
`'l‘rading's leaf spring products are
`
`olicred and/or delivered through the same or similar channels oi‘ trade as are Plaintil'l‘s leaf‘
`
`spring products.
`
`56.
`
`Plaintitl has never authorized or consented to either Defendant ZATCS or
`
`Delendant Trading‘s activities. alleged herein.
`
`57.
`
`Because Defendant /AT and i)elendant Trading have each adopted and
`
`used in commerce identical marks used lirst in the market by l’laintit‘t”_ customers and potential
`
`customers are likely to believe. and may have already believed. in error that the products offered
`
`by Deliendant ZAT and Defendant Trading are products offered by Plaintiff.
`
`58.
`
`Upon information and belief, Defendant [AT and Defendant Trading have
`
`each represented. advertised and/or otherwise misled the consuming public in commercial
`
`N5(1}7S_i
`
`
`
`Case 1:iO—cv—O1675—RMB —JS Doeumenti
`
`Filed 04/01/10 Page 12 of21 Page|D: 12
`
`advertising that l’laintifl‘s llNA Parts Numbering System is a parts numbering system other\visc
`
`on ned or permissibly used by Defendant /.AT and/or Defendant Trading.
`
`5‘).
`
`The actions of Defendants alleged herein are likely to confuse, cause
`
`inistake. mislead and/or deceive the relevant public as to the origin. sponsorship or approval of
`
`l)efendants‘ services. or commercial activities. and/or that Plaintiffand Defendants are affiliated.
`
`connected to. or associated with each other in violation of Section 43(a)(l)(A) of the l.anham
`
`Trademarl\' Act of T946. as amended. l5 U.S.C. § ll25(a)( l )(A).
`
`()0.
`
`The actions of [)efendant ZAT and Defendant Trading alleged herein
`
`constitute the use of a false or misleading description of fact. and/or a false or misleading
`
`representation of fact
`
`in commercial advertising or promotion. misrepresenting the nature,
`
`characteristics. and/or qualities. or geographic origin of Defendant /.AT and Defendant Trading
`
`products and/or commercial activities in violation of Section 43(a)( l )(B) of the Ianham
`
`'lra.demarl\’ Act of I046. as amended. 15 U.S.C.§ I l25(a)( l )(B).
`
`()1.
`
`The conduct ofeach ofDefcndant [AT and Defendant Trading has caused
`
`substantial and irreparable injury to the rights of Plaintiff and its UNA Mark and UNA Pans
`
`Numbering System. as well as to its business. reputation. and goodwill.
`
`()3.
`
`Plaintiff has no adequate remedy at law. Plaintiff \\ill continue to stiffer
`
`damages as a result of Defendant Z/\T‘s and Defendant Trading’s individual and collective
`
`actions. unless both Defendant ZAT and Defendant Trading are enjoined and restrained.
`
`COUNT ll
`STATE ANI) COMMON LAW TRADEMARK INFRINGEMENT
`
`63.
`
`Plaintiff incorporates by reference Paragraphs l
`
`through 62 above as set
`
`forth fully herein.
`
`.s5<~:7.s_i
`
`
`
`Case 1:10-ev-O1675—RMB -J8 Document 1
`
`Filed 04/01/10 Page 13 of 21 Page|D: 13
`
`64.
`
`Plaintil‘l‘s UNA Mark and UNA Parts Numbering System are valid and
`
`proteeutble marks and designations oforigin.
`
`65.
`
`Plaintiff used its UNA Mark and UNA Parts Numbering System in
`
`commerce prior to either Defendant 7.A'l"s or Defendant Trading”s first use ofthc UNA Mark or
`
`UNA Parts Numbering System in connection with its products.
`
`()0.
`
`Plaintillis a \\'ell—established New Jersey corporation which provides high
`
`quality leal‘ springs and spindles in interstate commerce using its UNA Mark or UNA Parts
`
`Numbering System.
`
`67.
`
`Through extensive ellorts by Plaintiff.
`
`its UNA Mark and UNA Parts
`
`Numbering System have come to have significance in the mind of the relevant
`
`trade and
`
`purchasing public as
`
`indicators of products originating with, sponsored by. or otherwise
`
`associated with Plaintiff‘.
`
`()8.
`
`liaeh of Defendant ZAT‘s and Defendant Trading"s products are in direct
`
`competition vx ith Plaintil‘l‘s products.
`
`6‘).
`
`liaeh of Defendant ZAT‘s and Defendant Trading”s products are ollered
`
`and/or rendered to the same or similar class ol‘ consumers and/or purchasing public as are
`
`Plaintil'l‘s products.
`
`70.
`
`liaeh of Defendant ZA'l“s and Defendant Trading’s products are ollered
`
`and/or delivered through the same or similar channels oftrade as are l’laintilT‘s products.
`
`71.
`
`Despite Plainti1‘Ts prior trademark rights. Defendant '/.AT and Defendant
`
`lrading have each adopted and used ViI'1Llall}’ identical marks which were used first in the market
`
`by Plaintill. This use is likely to. and may have already, caused considerable confusion, mistake,
`
`and/or deception as to the origin ofservices offered by Plaintiff’.
`
`.\'5n,:7s/1
`
`
`
`Case 1:10—ev—O1675—RMB —JS Document ‘I
`
`Filed 04/01/10 Page 14 of21 PagelD: 14
`
`72.
`
`Faeh of Defendant Z/\'l“s and Delendant Trading‘s acts of infringentent
`
`of the UNA Mark and UNA Parts Numbering System have been committed within the
`
`jurisdiction ol'this (‘ourt and have been committed in other jurisdictions throughout the United
`
`States.
`
`73.
`
`The actions of Delendant
`
`/,AT and Defendant Trading alleged herein
`
`individually and collectively constitute state and common law infringement of P|aintilTs UNA
`
`l\4ark and UNA Parts Numbering System.
`
`74.
`
`The actions of" Delendant ZAT and Defendant Trading alleged herein
`
`individually and collectively constitute infringement ol‘l’lainti1“1"s UNA Mark and TIN-'\ Parts
`
`Numbering System under N.J.S.A. §56:4—l.
`
`75.
`
`Plaintiff has no adequate remedy at
`
`law. The individual and collective
`
`actions ol‘ Detentlant ZAT and Delendant Trading have caused, and will continue to cause.
`
`substantial and irreparable injury to Plaintil'l' unless enjoined by this Court.
`
`STATE AND C()MlVI()N LAW UNFAIR COMPETITION
`
`(f()UNT III
`
`76.
`
`Plaintifili incorporates by ret”erence Paragraphs I
`
`through 75 above as set
`
`forth lully herein.
`
`77.
`
`l’laintit‘l‘s UNA l\/larlt and UNA Parts Numbering System are valid and
`
`proteetable inarks and designations oforigin.
`
`78.
`
`l’laintil‘t' used its UNA Mark and UNA Parts Numbering System in
`
`commerce prior to either Defendant '/4A'l"s or Defendant Trading’s lirst use ofthe UNA Mark or
`
`U\l/\ Parts Numbering System in connection with its products.
`
`X5(i37X_l
`
`
`
`Case 1:10—ev—01675—RMB -JS Document 1
`
`Filed 04/01/10 Page 15 of 21 PagelD: 15
`
`79.
`
`Through extensive efforts by Plaintiff.
`
`its UNA Mark and UNA Parts
`
`Numbering System have come to have significance in the mind of the relevant
`
`trade and
`
`purchasing public as
`
`indicators of products originating with, sponsored by. or otherwise
`
`associated with Plaintiff.
`
`80.
`
`Defendant 7./\T‘s and Defendant
`
`'frading's products are
`
`in direct
`
`competition with Plaintiff's products.
`
`81.
`
`Defendant Z/\'l"s and Defendant 'frading’s products are offered and/or
`
`rendered to the same or similar class of consumers and/or purchasing public as are Plaintiffs
`
`products.
`
`82.
`
`liaeh of Defendant Z/\'l“s and Defendant Trading"s products are offered
`
`and/or delivered through the same or similar channels oftrade as are Plaintift’s products.
`
`83.
`
`Because each of Defendant [AT and Defendant Trading has adopted
`
`virtually identical marks used first in the marltet by Plaintiff. customers and potential customers
`
`are liltely to believe. and indeed may have already believed.
`
`in error that products offered by
`
`each of Defendant ZAT and l)efendant Trading are the services offered by Plaintiff.
`
`84.
`
`Upon information and belief. Defendant /AT and Defendant Trading have
`
`each represented. advertised and/or otherwise misled the consuming public in commercial
`
`advertising that Plaintiffs UNA Parts Numbering System is a parts numbering system otherwise
`
`owned or permissibl_v used by Defendant Z/\'l‘ and/or Defendant Trading.
`
`85.
`
`The individual and collective actions of Defendant [AT and l)efcndant
`
`Trading alleged herein. which upon information and belief were committed with the intent to
`
`deceive the public. are likely to confuse. mislead and/or deceive the relevant public as to the
`
`origin. sponsorship or approval of Defendants‘ products or commercial activities. and/or that
`
`x5<»:7x_i
`
`
`
`Case 1:10—cv—O1675-RMB —JS Document 1
`
`Filed 04/01/10 Page 16 of21 Page|D: 16
`
`Plaintiffand Defendant ZAT and/or [)efendant Trading are affiliated. connected to. or associated
`
`\\ ith each other. in \ iolation ofN.J.S.A. § 5():4—l.
`
`86.
`
`The individual and collective actions of Defendant [AT and l)efcndant
`
`frading alleged herein constitute the willful Lise of a false and misleading description or
`
`inisrepresentation of fact as to the nature. characteristic. and quality of its products with the
`
`intent to deceive the public in violation ofN..l.S.A. § 5614-1.
`
`87.
`
`The individual and collective conduct of l)efendant [AT and Defendant
`
`lrading has caused substantial and irreparable injury to the rights of Plaintiff and its UNA Mark
`
`and UNA Parts Numbering System as well as to its business. reputation. and goodwill.
`
`88.
`
`Plaintiff has no adequate remedy at
`
`
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